USPTO on the defensive after error triggers litigation18Feb09

The United States Patent and Trademark Office (USPTO) has moved to quash any suggestion that its systems are faulty after a blunder arising from its online search facility and human error led to litigation.

The search function is at the centre of the dispute between Beckons Organic and Nordstrom, a national chain of 109 department stores. Beckons Organic, a small yoga clothing and lifestyle company run by two entrepreneurs, owns a registration for the BECKONS mark in Class 25 of the Nice Classification for apparel. Before that application was published, Seattle-based Nordstrom conducted a search using the USPTO’s Free Form Search (Advanced) prior to filing to register its mark BECKON. The search returned no similar prior mark because the Nordstrom attorney had not ticked the ‘plurals’ box which automatically defaults to ‘no’. Nordstrom went ahead with the application to register BECKON, also in Class 25.

“The New User Form Search (Basic) defaults more broadly to searching plural and singular,” explained Ruth Ann Nybold, a USPTO spokesperson. “The Free Form Search (Advanced) is intended for the more experienced user who is aware of the search techniques and fields.”

Nordstrom’s attorney’s mistake was compounded when the USPTO examining attorney failed to notice the conflict. “By allowing Nordstrom's BECKON application to proceed to publication, the USPTO overlooked Beckons Organic's registration for BECKONS for overlapping goods,” explains Michael Atkins, attorney and shareholder at Graham Dunn and author of Seattle Trademark Lawyer. Upon learning of its mistake, the USPTO attempted to correct it, albeit sparking a dispute that went to the Trademark Trial and Appeal Board. Atkins explains: “The USPTO did the only thing it was empowered to do: deny Nordstrom's application based on a likelihood of confusion with a prior registration.”

Beckons Organic found itself facing a financially prohibitive legal challenge. “There needs to be something in place to ensure errors made can be corrected without it resulting in huge monetary loss for the principal registrant,” suggests Becky Prater, co-founder of Beckons.

Nordstrom has since moved to settle the dispute amicably. “We never intended to affect Prater’s business adversely and we are sorry if this has happened,” explained Brooke White, a Nordstrom spokesperson. “We are reaching out again to Prater’s attorneys to reach a settlement that we are hoping she will find acceptable. We are hoping to resolve this quickly and amicably.”

Atkins notes that the mistake was the result of human error and while this should not have happened, “it does not signal that the USPTO is broken in some way”. Nybold added: “We are not aware of any prior complaints about the default.”